Am I Ready to Patent?

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Deciding when to file a patent application can be confusing…

Many inventors are justifiably confused about when is the “right” time to apply for patent protection. Apply too early and the invention might not be fully developed or a material change occurs that requires filing another application. Apply too late, and someone may apply for the same or similar invention before you or you might lose the ability to file in foreign countries.

Applying too early is usually only a bad thing when you are short on time and/or money (so as to allow for additional applications) or when your strategy doesn’t account for filing additional applications to address shortfalls in your original filing(s).

Applying too late can be tragic. Here are a few of the pitfalls:

  • Another person (anywhere in the world) applies for a similar invention prior to your filing. In the U.S. and in most other countries, the first-to-file gets the patent.
  • You use your invention, or sell it, or publish a paper about it more than a year prior to filing. You may have lost the ability to file a patent application for that invention.
  • You disclose (sell, discuss, write-about, etc.) your invention on a non-confidential basis to others, prior to filing. You may have sacrificed your ability to file in certain countries.

When should you file? You could get as many answers as people you ask, but here are the questions I ask new clients to help figure when they should file:

  1. Are you sufficiently along in the invention process?
    The earliest you should consider filing for a patent application is when you have “conceived” of the invention. BUT WAIT! “Conception” in patent law has a particular definition:“Conception is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” Allergan, Inc. v. Apotex, Inc., 754 F.3d 952, 967 (Fed. Cir. 2014) (citations omitted).Note the important portions of this phrasing: “complete and operative invention.” Does this mean you need a prototype? No (unless it’s a perpetual motion machine). Does it mean you need to have an ability to code in order to describe a computerized method? No, it does not. “Complete and operative invention” means you have to know what parts go into the invention and how it is going to function. Importantly, those factors of said invention are what a patent attorney/agent needs to assist in drafting your application.
  2. Have you disclosed your invention?Disclosures (sales, publications, etc.) of your invention can set wheels in motion that require you to file an application within a certain amount of time or you lose your ability to file altogether.
  3. Are you concerned about obtaining foreign filing rights?
    If you are sure you won’t want to file patent applications in any other countries, you may have additional latitude on delaying your filing. However, as noted, the risk of waiting is that someone else could file an application for the same invention before you. In that case you couldn’t get a patent (and potentially be unable to use your invention). But if you need to evaluate the market before spending money on patents, this risk may be palatable.
  4. Do you have a financial strategy that coincides with your IP strategy and vice-versa?
    Patent applications, in some ways, are more like used cars than other purchases you’ll make for your business. After paying for the drafting and filing fees there will likely be additional costs

    Don’t let time run out.

    in the future. In fact, you can spend a lot of money very quickly depending on your filing strategy and goals. Thus, an important consideration in deciding when to file (and what type of patent application to file) is to make sure your patent activities don’t outpace your finances.

Another consideration is whether the invention that is potentially available for patenting has the requisite value to your company to justify the investment. If not, you may decide that the current iteration of the invention, while possibly patentable, isn’t really ready to patent. It may not add value to your business in the way you’d envisioned.

Make sure you work with your patent attorney on an IP strategy that meets your business and IP goals. This will ensure that you’ll be applying for the right invention, at the right time, with proper expectations, and realistic goals.


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